Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE RESEARCH AND MANUFACTURING CO., INC.
Appeal No. 88-3277
October 25, 1988
Request filed January 28, 1987, Control No. 90/001,155, for the Reexamination of Patent No. 3,680,420, issued August 1, 1972, based on Serial No. 82,994 filed October 22, 1970. Cryogenic Ultramicrotome Apparatus.
Edwin M. Baranowski et al. for appellant
Primary Examiner--Donald R. Schran
Before Cohen, Lyddane, and Garris
This is a decision on an appeal from the final rejection of claims 1, 6, 10 through 14, 16, and 21 in the reexamination proceeding of U.S. Patent No. 3,680,420. These are all the claims remaining in this proceeding. No claim is allowed.
The subject matter on appeal relates to a microtome for sectioning biological tissues or the like under cryogenic conditions. Claims 1, 12, and 21 are illustrative of the invention as well as representative of the subject matter on appeal, and read as follows:
1. Cryogenic equipment for a microtome having a pivoting fulcrum comprising a frame, a container made of insulating material, a microtome knife positioned in said container, an inverted U-shaped specimen holder assembly mounted on the free end of said fulcrum, the spaced legs of said specimen holder assembly straddling a wall of said container and movable reciprocably and freely relative thereto, the outer leg of said specimen holder assembly extending into said container, a tissue holder removably mounted on said outer leg in a position where a tissue specimen mounted on said tissue holder is sectioned by the cutting edge of said knife when said fulcrum moves through one of its reciprocating passes.
12. A microtome for sectioning biological tissues or the like under cryogenic conditions comprising a frame, a fulcrum mounted pivotally on said frame, a container of insulating material for accommodating a quantity of cryogenic fluid mounted on said frame, a microtome knife positioned in said container, first means on said fulcrum freely bypassing a wall of said container and extending into the interior of said container, and second means mounted on that portion of the first means extending into the interior of said container for supporting a tissue specimen to be sectioned by said knife.
21. A microtome for sectioning biological tissues or the like under cryogenic conditions comprising a frame, a fulcrum mounted pivotally on said frame, a container of insulating material for accommodating a quantity of cryogenic liquid mounted on said frame, a microtome knife positioned in said container, the cutting edge of said knife being located in substantially the same horizontal plane as the pivot point of said fulcrum, an inverted U-shaped specimen holder assembly mounted on the free end of said fulcrum and extending freely over and around one wall of said container, the outer leg of said assembly extending into the interior of said container, and a tissue holder mounted on the lower portion of said leg for moving a tissue specimen on said holder relative to the cutting edge of said knife.
Christensen, "A Way To Prepare Frozen Thin Sections Of Fresh Tissue For Election Microscopy", (June 1968) in Autoradiography of Diffusible Substances, (1969), pages 349-362.
Sorvall Supplementary Bulletin FTS 26-69 (hereafter Sorvall bulletin), Copyright Registration No. A90038, dated August 29, 1969.
Claims 1, 11, and 21 stand rejected under 35 USC 102(b) as being anticipated by the Sorvall bulletin.
Claims 12 through 14 stand rejected under 35 USC 102(b) as being anticipated by the Christensen article.
Claims 6, 10, and 16 stand rejected under 35 USC 103 as being unpatentable over the disclosure of the Christensen article in view of the Sorvall bulletin. [FN1] The examiner considers that it would have been obvious to one having ordinary skill in the art of microtomes to have modified the fulcrum arm disclosed in the Christensen article to have included an inverted U at the end thereof as disclosed in the Sorvall bulletin.
We refer to pages 4 through 6 of the examiner's answer for the full statement of the examiner's rejections of the claims on appeal.
Appellant has argued, with respect to claims 12 through 14, that the examiner has not properly applied 35 USC 102(b) and not properly construed 35 USC 112 with respect to the "means" clauses. Appellant cites Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed.Cir.1987), as stating that not any means is properly covered by a "means" clause, but rather only "structure ... which performs that function [which] is the same as or an equivalent of the structure disclosed in the specification" (brief, page 11). It is also argued that no means other than the "U-shaped" specimen holder is described in appellant's patent, thus no interpretation other than that derived from the patent disclosure is proper. Appellant also contends that even if the literal meaning of the claim 12 language "freely bypassing" is considered by itself, in the Christensen article it is the fulcrum arm that penetrates the container wall, not a separate means attached to the fulcrum. It is maintained that the arm of Christensen also does not "bypass, avoid or go around the wall of the container" (brief, page 17) and that the Christensen article d